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Alkem Laboratories Ltd V/S Deccan Healthcare Ltd


Company & Directors' Information:- ALKEM LABORATORIES LIMITED [Active] CIN = L00305MH1973PLC174201

Company & Directors' Information:- J F LABORATORIES LIMITED [Under Liquidation] CIN = U24232MH1988PTC049457

Company & Directors' Information:- R G S HEALTHCARE PRIVATE LIMITED [Active] CIN = U85110PB2004PTC047381

Company & Directors' Information:- R G S HEALTHCARE PRIVATE LIMITED [Active] CIN = U85110CH2004PTC027689

Company & Directors' Information:- P. H. HEALTHCARE PRIVATE LIMITED [Active] CIN = U33110MH2010PTC208651

Company & Directors' Information:- B G P HEALTHCARE PRIVATE LIMITED [Active] CIN = U24232GJ2007PTC050417

Company & Directors' Information:- D R HEALTHCARE PRIVATE LIMITED [Active] CIN = U85110GJ2006PTC048008

Company & Directors' Information:- DECCAN INDIA CORPORATION PRIVATE LIMITED [Active] CIN = U74900TG2009PTC064949

Company & Directors' Information:- M J HEALTHCARE PRIVATE LIMITED [Active] CIN = U93090PN2008PTC132455

Company & Directors' Information:- R R G LABORATORIES LIMITED [Strike Off] CIN = U24230DL1984PLC018691

Company & Directors' Information:- S J HEALTHCARE PRIVATE LIMITED [Active] CIN = U85190MH2005PTC153435

Company & Directors' Information:- S R LABORATORIES PRIVATE LIMITED [Active] CIN = U24232TG2005PTC047885

Company & Directors' Information:- G J HEALTHCARE PRIVATE LIMITED [Active] CIN = U85110PB1998PTC021049

Company & Directors' Information:- M S LABORATORIES LIMITED [Strike Off] CIN = U24100DL1993PLC051613

Company & Directors' Information:- I M HEALTHCARE PRIVATE LIMITED [Active] CIN = U24232CH2010PTC032454

Company & Directors' Information:- B R LABORATORIES LIMITED [Active] CIN = U23209GJ1994PLC022124

Company & Directors' Information:- B M K LABORATORIES PRIVATE LIMITED [Amalgamated] CIN = U99999MH1978PTC020294

Company & Directors' Information:- K G HEALTHCARE LIMITED [Active] CIN = U85110TZ1995PLC006402

Company & Directors' Information:- J P LABORATORIES PRIVATE LIMITED [Active] CIN = U73100PN1998PTC012528

Company & Directors' Information:- C S HEALTHCARE PRIVATE LIMITED [Active] CIN = U85110GJ2012PTC070018

Company & Directors' Information:- M M HEALTHCARE LIMITED [Active] CIN = U74899DL1988PLC034339

Company & Directors' Information:- A L B HEALTHCARE PRIVATE LIMITED [Strike Off] CIN = U85110UP2002PTC026786

Company & Directors' Information:- S B M HEALTHCARE (INDIA) PRIVATE LIMITED [Active] CIN = U33112DL2005PTC140703

Company & Directors' Information:- P & B LABORATORIES LIMITED [Active] CIN = U24110MH1964PLC013023

Company & Directors' Information:- S A HEALTHCARE PRIVATE LIMITED [Strike Off] CIN = U85100OR2014PTC018365

Company & Directors' Information:- D I LABORATORIES LTD [Active] CIN = U24239WB1986PLC041034

Company & Directors' Information:- AND HEALTHCARE LIMITED [Active] CIN = U51909PB2017PLC046446

Company & Directors' Information:- M. R. LABORATORIES PRIVATE LIMITED [Active] CIN = U24239TG2006PTC051263

Company & Directors' Information:- N B LABORATORIES PRIVATE LIMITED [Active] CIN = U24295MH1998PTC117004

Company & Directors' Information:- D. S. HEALTHCARE PRIVATE LIMITED [Active] CIN = U24232WB2007PTC115617

Company & Directors' Information:- B N HEALTHCARE PRIVATE LIMITED [Active] CIN = U15412AS2000PTC006258

Company & Directors' Information:- P AND B HEALTHCARE PRIVATE LIMITED [Strike Off] CIN = U24230GJ2013PTC075056

Company & Directors' Information:- M M D HEALTHCARE LIMITED [Active] CIN = U65921CH1996PLC017595

Company & Directors' Information:- A N LABORATORIES PRIVATE LIMITED [Active] CIN = U85191MH2011PTC223368

Company & Directors' Information:- A AND R HEALTHCARE PRIVATE LIMITED [Active] CIN = U24239DL1999PTC102404

Company & Directors' Information:- K. N. HEALTHCARE PRIVATE LIMITED [Active] CIN = U85320RJ2018PTC061003

Company & Directors' Information:- R F B HEALTHCARE PRIVATE LIMITED [Active] CIN = U85190DL2021PTC384643

Company & Directors' Information:- M S HEALTHCARE PRIVATE LIMITED [Active] CIN = U24239MH2001PTC130893

Company & Directors' Information:- P C LABORATORIES PRIVATE LIMITED [Active] CIN = U24231BR1972PTC000950

Company & Directors' Information:- P C LABORATORIES PRIVATE LIMITED [Not available for efiling] CIN = U24231BR1973PTC000930

Company & Directors' Information:- G A S HEALTHCARE PRIVATE LIMITED [Active] CIN = U74999BR2018PTC038700

Company & Directors' Information:- L. J. HEALTHCARE PRIVATE LIMITED [Active] CIN = U85100HR2019PTC078493

Company & Directors' Information:- J. R. HEALTHCARE PRIVATE LIMITED [Active] CIN = U85191UP2013PTC054982

Company & Directors' Information:- U. D. LABORATORIES PRIVATE LIMITED [Active] CIN = U85100WB2007PTC115385

Company & Directors' Information:- M A P H HEALTHCARE PRIVATE LIMITED [Under Process of Striking Off] CIN = U85100WB2010PTC144870

Company & Directors' Information:- N. C. HEALTHCARE PRIVATE LIMITED [Active] CIN = U85191DL2007PTC164437

Company & Directors' Information:- N Y HEALTHCARE PRIVATE LIMITED [Active] CIN = U24230GJ2010PTC063348

Company & Directors' Information:- H 4 HEALTHCARE PRIVATE LIMITED [Active] CIN = U15100MH2021PTC353283

Company & Directors' Information:- J B LABORATORIES PVT LTD [Active] CIN = U24232PB1993PTC013762

Company & Directors' Information:- D. B. HEALTHCARE PRIVATE LIMITED [Active] CIN = U33205MH2014PTC253439

Company & Directors' Information:- G S LABORATORIES PRIVATE LIMITED [Strike Off] CIN = U24231UP1999PTC024990

Company & Directors' Information:- M B LABORATORIES PRIVATE LIMITED [Strike Off] CIN = U24231DL1999PTC098347

Company & Directors' Information:- K S V HEALTHCARE PRIVATE LIMITED [Active] CIN = U85195HR2011PTC043767

Company & Directors' Information:- N M HEALTHCARE PRIVATE LIMITED [Active] CIN = U85110MH2000PTC125392

Company & Directors' Information:- T K HEALTHCARE (INDIA ) PRIVATE LIMITED [Strike Off] CIN = U85190MH2003PTC139346

Company & Directors' Information:- B L B LABORATORIES PVT LTD [Strike Off] CIN = U74999MH1986PTC038541

Company & Directors' Information:- A R HEALTHCARE PRIVATE LIMITED [Active] CIN = U85110CH2013PTC034820

Company & Directors' Information:- I P HEALTHCARE PRIVATE LIMITED [Active] CIN = U24239DL2003PTC121211

Company & Directors' Information:- A 2 Z HEALTHCARE PRIVATE LIMITED [Active] CIN = U85100DL2010PTC208860

Company & Directors' Information:- K. D. HEALTHCARE INDIA PRIVATE LIMITED [Strike Off] CIN = U85100DL2015PTC281658

Company & Directors' Information:- A AND N LABORATORIES PRIVATE LIMITED [Strike Off] CIN = U24239TG1985PTC005901

Company & Directors' Information:- J. M .LABORATORIES PRIVATE LIMITED [Strike Off] CIN = U85110DL1994PTC061158

Company & Directors' Information:- A P HEALTHCARE PRIVATE LIMITED [Active] CIN = U24230MH1999PTC122520

Company & Directors' Information:- B M K LABORATORIES PRIVATE LIMITED [Amalgamated] CIN = U36912MH2011PTC220030

Company & Directors' Information:- K Y O S HEALTHCARE PRIVATE LIMITED [Strike Off] CIN = U51397HP2010PTC031280

Company & Directors' Information:- A H LABORATORIES P LTD [Strike Off] CIN = U24232PB1990PTC010830

Company & Directors' Information:- A P LABORATORIES PRIVATE LIMITED [Strike Off] CIN = U24233UP1974PTC003855

Company & Directors' Information:- Z F HEALTHCARE PVT. LTD. [Active] CIN = U29295MH2006PTC164255

Company & Directors' Information:- K. B. B. K. HEALTHCARE PRIVATE LIMITED [Active] CIN = U85110RJ2013PTC041465

Company & Directors' Information:- T.H.E. HEALTHCARE COMPANY PRIVATE LIMITED [Strike Off] CIN = U33111MH2012PTC229451

Company & Directors' Information:- J S B HEALTHCARE PRIVATE LIMITED [Active] CIN = U74120MH2013PTC248848

Company & Directors' Information:- J S D HEALTHCARE PRIVATE LIMITED [Strike Off] CIN = U74120UP2011PTC046578

Company & Directors' Information:- S V T HEALTHCARE PRIVATE LIMITED [Strike Off] CIN = U85100TZ2009PTC015287

Company & Directors' Information:- D S LABORATORIES PRIVATE LIMITED [Active] CIN = U85100WB2013PTC192872

Company & Directors' Information:- A N S HEALTHCARE PRIVATE LIMITED [Active] CIN = U85100HP2011PTC031745

Company & Directors' Information:- J M HEALTHCARE PRIVATE LIMITED [Active] CIN = U24230CH2007PTC030943

Company & Directors' Information:- P R HEALTHCARE PRIVATE LIMITED. [Strike Off] CIN = U24231DL2003PTC120123

Company & Directors' Information:- R S M HEALTHCARE PRIVATE LIMITED [Strike Off] CIN = U24232DL2005PTC136255

Company & Directors' Information:- P K LABORATORIES PRIVATE LIMITED [Active] CIN = U24239DL2004PTC127774

Company & Directors' Information:- M H HEALTHCARE PRIVATE LIMITED [Active] CIN = U74999DL2016PTC289311

Company & Directors' Information:- N T HEALTHCARE PRIVATE LIMITED [Active] CIN = U85100DL2012PTC241304

Company & Directors' Information:- R A HEALTHCARE PRIVATE LIMITED [Strike Off] CIN = U85190DL2009PTC188221

Company & Directors' Information:- G & G HEALTHCARE PRIVATE LIMITED [Active] CIN = U51397HR2015PTC057293

Company & Directors' Information:- P D HEALTHCARE PRIVATE LIMITED [Active] CIN = U24230GJ2004PTC045131

Company & Directors' Information:- V B LABORATORIES PRIVATE LIMITED [Strike Off] CIN = U24232GJ2013PTC077087

Company & Directors' Information:- L. V. G. HEALTHCARE PRIVATE LIMITED [Active] CIN = U24233GJ2006PTC047749

Company & Directors' Information:- S H G HEALTHCARE PVT LTD [Strike Off] CIN = U85110WB1989PTC047231

Company & Directors' Information:- A AND V LABORATORIES LIMITED [Strike Off] CIN = U24232DL1995PLC065731

Company & Directors' Information:- B. S. LABORATORIES PRIVATE LIMITED [Strike Off] CIN = U24232UP1995PTC019060

    CS (COMM) 97/2019

    Decided On, 13 December 2019

    At, High Court of Delhi

    By, THE HONORABLE JUSTICE: MUKTA GUPTA

    For Petitioner: Sagar Chandra, Srijan Uppal and Jyotsna Arora, Advocates



Judgment Text

1. Summons in the present suit were issued vide order dated 20th February 2019. None appeared on behalf of the defendants. The right of the defendant to file written statement was closed and the defendants were proceeded ex-parte vide order dated 14th August 2019.

2. By the present suit the plaintiff, inter alia, prays for a decree of permanent injunction restraining the Defendant, their directors, executives, partners, proprietors, as the case may be, their officers, servants and agents or any other persons acting for and on their behalf from manufacturing, selling, offering for sale, exporting, advertising, marketing and/or in any manner using directly or indirectly in relation to any health supplement, pharmaceutical and/or medical preparation and/or such allied and cognate goods under the Impugned Mark 'A to Z DECC or any other identical and/or deceptively similar mark to that of the Plaintiff's mark A TO Z, A TO Z NS and A TO Z Family of Marks or any other Logo identical/deceptively similar to the Plaintiff's 'A TO Z Logo', 'A TO Z NS Carton', 'A TO Z NS BLISTER STRIP', 'A TO Z NS NEW Carton' and 'ATO Z NS NEW Blister Strip' which will lead to passing off of defendant's goods as those of plaintiff's or dilution of plaintiff's trademarks, logo and trade dress or unfair competition besides a decree for delivery up of goods bearing the impugned mark, rendition of accounts and decree of damages to the tune of ` 2,00,05,000.

3. Case of the plaintiff is that it is a leading pharmaceutical company, involved in manufacturing and sale of pharmaceutical and nutraceutical products. It has been ranked amongst the top 10 pharmaceutical companies in India and has a world-wide presence. Plaintiff has generated revenue to the tune of ` 64,312 million for the financial year 2018 compared to ` 58,525 million the previous year, recording the growth of 9.9%.

4. Further, the plaintiff has a wide-ranging existence across acute and chronic therapeutic segments and holds a considerable market share in Gastro-intestinal, Anti-osteoporosis, Nutraceutical, pain management and Anti-infective segments with 14 of the brands featuring amongst the top 300 brands in India. Plaintiff has also spent a huge sum on the research and development of its products and has more than 13,000 Alkemites working across globe along with 8,000 medical representatives, more than 7000 stockists, more than 40 sales depots and warehouses in India. The plaintiff is also the registered proprietor of various 'A TO Z' Family of Marks in classes 29, 30 and 5.

5. Plaintiffs mark 'A TO Z' as designed by Mr. P.V. Damondaran is unique and distinctive logo wherein the letters A and Z are written in a stylized manner and trade-dress. It is continuously in use from the year 1998 till date for its tablets, capsules, syrups and drops. It is submitted that the same is an 'Artistic Work' within the ambit of Section 2(c) of the Copyrights Act, 1957 and plaintiff is the owner of it by virtue of Section 17(c) of the Copyrights Act, 1957.

6. The 'A TO Z NS' mark was adopted by the plaintiff in the year 2008 and was in use till the year 2017. Further, plaintiff launched products bearing the trademark 'A TO Z NS Carton' in the year 2008 and used it till the year 2017. The said mark as designed by Mr. Prasanna Kotianand, bears a yellow background with the 'A TO Z NS Logo' in the center consisting of the 3D 'A TO Z' Logo in red colour and 'TO' decorated in the middle on a yellow rectangular device with 'NS' written on the bottom right corner of the Logo. Plaintiff has mentioned the composition of the tablets on the top of the logo while quantity of the capsules is mentioned on the top-right corner and 'A TO Z NS' is written in Hindi on the bottom left corner. Multiple red horizontal lines as shown in the image below surrounds the logo with 'HEALTH SUPPLEMENT' written in the bottom center.



7. Plaintiff's product 'A TO Z NS NEW' known as 'A TO Z NS Blister Strip' is sold in a red colored rectangular blister strip as shown below.



8. Further, plaintiff discontinued 'A TO Z NS' and launched 'A TO Z NS NEW in an identical packaging and trade-dress in the year 2017. It continued to use the same trade-dress with minor variations in 'A TO Z NS NEW Carton' as shown below:



9. Plaintiff's product 'A TO Z NS NEW BLISTER STRIP' was sold in a red colored rectangular blister strip as shown below.



10. The 'A TO Z Logo', 'A TO Z NS Logo', 'A TO Z NS Carton and Blister Strip', 'A TO Z NS New Carton and Blister Strip' are an 'Artistic Work' within the meaning of Section 2(c) of the Copyright Act, 1957. The said artistic works were conceived and designed by the Plaintiff in-house and therefore the Plaintiff is the absolute owner of Copyright in the said Artistic Work by virtue of Section 17(c) of the Copyright Act, 1957. The Plaintiff is the registered proprietor of the copyright in the A TO Z Carton bearing No. A-89428/2010 shown below:



11. Plaintiff is also the registered proprietor of the copyright in A TO Z artistic work bearing No. A-89426/2010 along with A TO Z DROPS bearing no. A-90376/2011 and A TO Z GOLD NS bearing no. A-108732/2014.

12. Several efforts and huge amount of money has been invested by the plaintiff in the promotion of the products bearing the said marks. Due to the continuous and interrupted use, the said marks are generally associated with the plaintiff in respect of medicinal, pharmaceutical preparations and substances.

13. A suit titled Alkem Laboratories Ltd. v. Le Meridian Health Care & Anr. bearing CS (OS) No. 952 of 2014 was instituted by the plaintiff for the use of the mark 'ALL VIT Z' wherein this Hon'ble Court vide Order dated 1st April 2014 granted an ex-parte interim injunction restraining defendants from selling or in any manner dealing in products bearing the said mark. The suit was thereafter decreed in terms of the Settlement Agreement entered into between the parties vide order dated 16th September 2015.

14. Grievance of the plaintiff is that the defendant is involved in marketing and manufacturing of an identical product bearing the mark 'A TO Z DECC' being deceptively similar to the plaintiff's mark. The impugned product bears a nearly identical logo, trade-dress, ingredients and plaintiff's artistic work as on the packaging of A TO Z NS and A TO Z NS NEW. On 29th November 2018, the plaintiff got to know about the Defendants product "A TO Z DECC". On perusal of defendants products it is evident that it has used a nearly identical logo, trade-dress and have substantially reproduced Plaintiffs artistic work of products A TO Z NS and A TO Z NS NEW on the impugned product that is "A TO Z DECC". Even the ingredients of the plaintiff product "A TO Z NS/A TO Z NS NEW" and defendants' product "A TO Z DECC" are identical that is multivitamin, multimineral, antioxidants and methyl cobalamin tablets.

15. Plaintiff had previously also instituted a suit against the same defendant titled Alkem Laboratories Ltd. v. Deccan Healthcare Pvt. Ltd. bearing no. 1142 of 2018 for the use of the mark GEMCAL DEC which is nearly identical to plaintiff's registered trademark GEMCAL. An ex-parte interim injunction was granted by this Court restraining the defendant from using the impugned mark 'GEM-CAL-DEC, 'GEM-CAL-DEC Carton', 'GEM-CAL-DEC Blister Strip' or any other mark identical or deceptively similar to plaintiff's marks 'GEMCAL', 'GEMCAL Carton', 'GEMCAL Blister Strip'.

16. The tabular comparison of products of Plaintiffs and Defendants which are subject matter of dispute in the present suit is depicted below:





17. In compliance of order dated 20th February 2019, the Local Commissioner carried out an investigation at Plot No. 13-3, SID-CUL, Integrated Industrial Area, Pant Nagar, Udham Singh Nagar-263153, Uttarakhand and submitted a report. In his report he has submitted that he along with his team proceeded to the production unit of the Defendant company where they met Mr. Ajay Maheshwari and Mr. Tara Singh who took them to the unit where the Impugned product "A TO Z DECC" were being manufactured and packed. They found several cartons of the impugned product and packaging material used for the same. Thereafter an inventory of the same was prepared and a total of 51 cartons were sealed. On making an enquiry about the books of accounts from Mr. Ajay Maheshwari and Mr. Mohak Gupta they replied that the same is maintained at the company's head office in Hyderabad but, during the search a document titled "Customer Sale Order" was found and same was handed over to the local commissioner under the seal of Defendants company.

18. Evidence by way of an affidavit on behalf of the plaintiffs was tendered by Mr. Deepak Kumar vide Ex. PW-1/X, wherein the contents of the plaint were reiterated in the said affidavit. Copy of Letter of Authorization dated 13th April 2012 issued by Plaintiff in favour of Mr. Deepak Kumar, authorized by Board Resolution was proved as Ex. PW-1/1. Photographs of various products of the Plaintiff bearing the A TO Z Family of Marks were proved as Ex. PW-1/2. Original certificates for use in legal proceedings of the Plaintiffs registered 'A TO Z" Family of Marks were proved as Ex. PW-1/3 (Colly). Printouts of online status, trademark application and registration certificates of Plaintiffs A TO Z Family of Marks in Classes 29, 30 and 5 were proved as Ex. PW-1/4 (Colly). Affidavit under Section 65B of the Indian Evidence Act of Mr. Nikhil Sharma dated 19th February 2019 was proved as Ex. PW-1/5. Original Authority letter from the Plaintiff company in favour of Mr. Nikhil Sharma was proved as Ex. PW-1/6. Printouts of plaintiff's digital office copies of Invoices from the year 1999 till 2018 for product A TO Z Family of Marks were proved as Ex. PW-1/7(Colly). Counter Foil/Office Copy of the Extension Letter of Mr. P.V. Damodaran dated 2nd November 2018 was proved as Ex. PW-1/8. Affidavit under 65B of the Indian Evidence Act of Mr. Nikhil Sharma dated 4th December 2019 was proved as Ex. PW-1/9. Counter Foil/Office Copy of the Letter of Appointment of Mr. Prasanna Kotian dated 19th June 2006 was proved as Ex. PW-1/10. Digital photographs of carton and blister strips of plaintiff's product bearing the mark 'A TO Z NS NEW were proved as Ex. PW-1/11. Copy of copyright registration certificate bearing No. A-89428/2010 was proved as Ex. PW-1/12. Copy of copyright registration certificate bearing Nos. A-89426/2010, A-90376/2011 and A-108732/2014 were proved as Ex. PW-1/13(Colly). Original CA certificate certifying sales figures of the Plaintiff under the mark A TO Z NS was proved as Ex. PW-1/15. Original CA certificate certifying sales promotional expenses of the Plaintiff under the mark A TO Z Family of Marks was proved as Ex. PW-1/16. Printout of various third-party websites where plaintiffs 'A TO Z NS' is being sold were proved as Ex. PW-1/17. Printout of relevant extracts from the Annual Reports of the plaintiff's company of the year 2015-2016, 2016-2017 and 2017-2018 were proved as Ex. PW-1/18. Copy of certified copies of order dated 1st April 2014 and 16th September 2017 passed by his Court in CS(OS) 952/2014 titled 'Alkem Laboratories Ltd. v. Le Meridian Healthcare and Anr.: were proved as Ex. PW-1/9 (Colly). Original sale invoice dated 29th November 2018 of the Defendants product A TO Z DECC was proved as Ex. PW-1/20. Photographs of carton and blister strips of the defendant's product bearing mark 'A TO Z DECC were proved as Ex. PW-1/21. Printout of official website of defendant was proved as Ex. PW-1/22. Printout of company details of Defendants available on Ministry of Corporate Affairs website was proved as Ex. PW-1/23. Printout of order dated 26th

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September 2018 and 18th December 2018 passed in CS(Comm.) 1142/2018 by this Hon'ble Court were proved as Ex. PW-1/24 and Ex. PW-1/25 respectively. Affidavit under Section 65-B of the Indian Evidence Act of Mr. Nikhil Sharma dated 26th March 2019 was proved as Ex. PW-1/26. Copy of decree in suit bearing No. CS(Comm.) 1142/2018 was proved as Ex. PW-1/27. Local Commissioner Report dated 14th March 2019 was proved as Ex. PW-1/28. 19. From the pleadings of the plaintiff in the plaint as also the documents exhibited along with the necessary certificates, the plaintiffs have clearly made out a case for grant of injunction in terms of prayer (i), (ii), (iii), (iv) and (v) as the Defendant is violating the rights of the plaintiff in its trademark as well as copyright. Plaintiff does not press the prayers (vi) and (viii). Hence no decree in terms of prayer (vi) and (viii) can be passed. 20. As regards cost in terms of prayer (ix), the plaintiff has filed a bill indicating the cost incurred by the plaintiff including Court fees, fees of local commissioner, miscellaneous expenses and legal cost which amounts to total sum of ` 5,73,152/-. 21. Suit is accordingly decreed in terms of prayer (i), (ii), (iii), (iv) and (v) of para 38 of the plaint in favour of the plaintiff and against the defendant. Cost of ` 5,73,152/-. is awarded in favour of the plaintiffs and against the Defendant.
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